The Complainant is Nuova Centauro S.R.L. of Montegranaro, Italy, represented by Bugnion S.p.A., Italy.
The Respondent is Zhang Lixiang of Ningbo, Zhejiang, China.
The disputed domain name <albertoguardianisale.com> is registered with Xiamen ChinaSource Internet Service Co., Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2017. On November 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 10, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 10, 2017, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on November 13, 2017. The Respondent did no comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on November 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2017.
The Center appointed Douglas Clark as the sole panelist in this matter on December 13, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant, founded in 1984, is an Italian Company that sells apparel and textile products. It owns the trademark ALBERTO GUARDIANI and has been selling handmade footwear bearing the trademark for 70 years.
The Complainant’s products are sold worldwide through mono-brand and multi-brand stores. The Complainant’s mono-brand stores are located in Italy, Russia Federation and Turkey and the Complainant also sells their products through other numerous retailers such as Selfridges and Colette across the world.
The Complainant has in the past years received high profile recognition through its collaboration with different magazines and museums. The Complainant’s brand Alberto Guardiani was featured on a renowned fashion magazine called i-D Magazine and it was included in an exhibition at the FIT Museum in New York.
The Complainant is the registered proprietor or the trademark ALBERTO GUARDIANI in several jursidictions in different classes, including Italian registration no. 0000995770 (registered on March 2, 2006), and European Union Trade Mark No. 009476409 (registered on March 8, 2011); international registration no. 894952 (registered on March 2, 2006); Chinese registration nos. 3512354 (registered on September 14, 2004), 3512355 (registered on April 28, 2005), 3512356 (registered on January 14, 2007), 3512357 (registered on September 14, 2004), 3512358 (registered on April 28, 2005) and 3512359 (registered on May 21, 2005).
The disputed domain name was registered on September 8, 2016. The webpage resolves to an online retail website that sells seemingly counterfeit Alberto Guardiani products.
The Complainant’s contentions are as follows:
Identical or confusingly similar
The Complainant contends that the disputed domain <albertoguardianisale.com> is confusingly similar to the Complainant’s registered trademark ALBERTO GUARDIANI as the disputed domain name incorporates the Complainant’s whole trademark. The inclusion of non-distinctive and/or descriptive term (“sale”) does not avoid or negate the finding of confusing similarity.
No rights or legitimate interests
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any license or trademark registrations for ALBERTO GUARDIANI. It, therefore, has no rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
Before acquiring the disputed domain name, it is highly likely that the Respondent knew of the Complainant’s rights in the ALBERTO GUARDIANI mark because of their international presence and reputation. The Complainant contends that the Respondent acquired the disputed domain name to attract Internet users to its website for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
The language of the Registration Agreement is in Chinese. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complainant requested the language of the proceeding be English on the grounds that the Respondent has been actively conducting business in English through its English only website and if the Complainant were to translate documents in Chinese, the proceedings may be delayed and the Complainant would incur unnecessary expense.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
On the facts of this case, the Panel does not consider it appropriate to require the Complainant to translate the Complaint as it will unnecessarily delay the proceeding. The content of the website under the disputed domain name is wholly in English, the Panel therefore considers that the Respondent has a good knowledge of English.
The Panel will render its decision in English.
The disputed domain name <albertoguardianisale.com> is confusingly similar to the Complainant’s ALBERTO GUARDIANI trademark. It incorporates the Complainant’s trademark in its entirety.
According to previous UDRP decisions, the “addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The first element of paragraph 4(a) of the Police is therefore satisfied.
The Respondent has not responded to the Complaint to assert any rights or legitimate interests.
Section 2.1 of the WIPO Overview 3.0 provides:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads. None of the circumstances in paragraph 4(c) of the Policy are present in this case.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
The Panel finds that the disputed domain name <albertoguardianisale.com> was registered in bad faith and is being used in bad faith.
This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The website under the disputed domain name makes it clear the Respondent knew of the Complainant. The website appears to be an e-commerce platform that advertises and sells seemingly counterfeit Alberto Guardiani footwear. It is clear that the Respondent knew of the Complainant because <albertoguardianisale.com> has Alberto Guardiani’s advertisement on the top middle part of the website, the trademark is used to mislead and attract potential customers to purchase the “on sale” footwear on the website.
The content of the disputed domain name also creates a false impression that the Respondent is in some way affiliated with or is in fact Alberto Guardiani. The disputed domain name is no doubt being used to attract Internet users for commercial gain.
The Panel has no hesitation in finding that the disputed domain name was registered with the intent to create confusion that the website under the disputed domain name is in some way related to the Complainant and that the registration was made in bad faith.
The third element of paragraph 4(a) of the Policy is therefore satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <albertoguardianisale.com> be transferred to the Complainant.
Date: January 8, 2018
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